August 18, 2016

Federal Circuit Court Decisions For Week Ending July 29, 2016

LendingTree v. Zillow, Inc. Case Nos. 2014-1435, 2014-1531, and 2015-1186 (July 25, 2016) (nonprecedential) Patent Nos. 6,385,594 and 6,611,816

Key point(s):

  • To pass step 2 of the Alice framework, the claim must recite more than implementing the abstract idea using generic technology.
  • Correction of inventorship under 35 U.S.C. § 256 of a patent-in-suit may be allowed after a verdict is final.

Koninklijke Philips N.V. v. Zoll Medical Corporation Case Nos. 2014-1764 and 2014-1791 (July 28, 2016) (nonprecedential) Patent Nos. 5,607,454; 5,749,905; 6,047,212; 5,800,460; 5,879,374; and 5,330,526

Key point(s):

  • Because an independent device claim recited “electrodes in electrical communication with the exterior of a patient,” instead of “electrodes configured to be in electrical communication,” no devices sold by Zoll infringed this claim or its dependents.
  • Documents that are not public and therefore not evidence of prior art in themselves can be used to corroborate other evidence of prior art.

In Re Magnum Oil Tools Int’l., Case No. 2015-1300 (July 25, 2016) (precedential) (3-0) Patent No. 8,079,413

Key point(s):

  • The Board cannot adopt arguments for petitioners that could have been, but were not, raised by the Petitioner in an IPR.

Respironics, Inc. v. Zoll Medical Corp. Case No. 2015-1485 (July 29, 2016) (nonprecedential) Patent No. 6,681,003

Key point(s):

  • The fact that an unclaimed element may be necessary for a device to function as claimed does not, standing alone, allow courts to treat the unclaimed element as a claim limitation.

Advanced Ground Information Systems, Inc. v. Life360, Inc. Case No. 2015-1732 (July 28, 2016) (precedential) (3-0) Patent Nos. 7,031,728 and 7,672,681

Key point(s):

  • A term or combination of terms in a claim that is not used by a person of skill in the pertinent art will be treated as “means-plus-function” claiming under 35 U.S.C. § 112, ¶ 6

Verinata Health, Inc. v. Ariosa Diagnostics, Inc. Case No. 2015-1970 (July 26, 2016) (precedential) (3-0) Patent Nos. 7,955,794

Key point(s):

  • An arbitration clause excluding scope, infringement, validity, and/or enforceability of Intellectual Property Rights will also exclude counterclaims over licenses.

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